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Protection of Intellectual Property (IP) Rights
To date, Myanmar relies on outdated colonial-era laws to protect IP rights. These laws include the Registration Act 1908, Copyright Act 1914 and the Merchandise Marks Act 1889. Myanmar’s Merchandise Marks Act was taken from India’s law. India has repealed the Merchandise Marks Act by the Trade and Merchandise Marks Act 1958, which was in turn replaced by The Trademarks Act 1999.
As Myanmar does not have modern IP laws up till now, there is no proper system for the registration of IP rights which confers protection for the IP registered.
Protection of trade marks
Under the existing laws, a trade mark is protected only if it has been used (commonly known as the “first to use system”). As there is no system of IP registration, a practice has developed where a trademark owner makes a Declaration of Ownership and registers it with the Office of Registration of Deeds under the Registration Act 1908 (now repealed). After the declaration is registered, it is customary for the trademark owner to publish a Cautionary Notice in local newspapers informing the public that the mark belongs to the trademark owner.
There has been no reported court decision on whether the registration of a Declaration of Ownership confers rights on a trademark owner where the trademark has not been used in Myanmar. However, the practice continues to date as there is no other way of recording a brand owner’s right in a trademark.
Upcoming reforms
Myanmar has embarked on modernizing its Intellectual Properties (IP) laws. Draft laws for the protection of trademarks, copyrights, industrial designs and patents have been presented to the Legislative Committee since 2014.
The long awaited Trade Marks Law has finally received the President’s assent at the end of January 2019. The Trade Marks Law is intended to harmonize Myanmar’s trade mark laws and trade mark registration process with the rest of the world. The current first-to-use system will be replaced with a first-to-file system. Under the first-to-file system, where more than one person applies to register an identical or a similar mark, the Registrar will only allow the registration of the trade mark application which was (i) filed the earliest; or (ii) has the earliest priority right.
The practice of registering a Declaration of Ownership will soon give way to a formal trade mark registration process. Owners of marks registered under the Registration Act 1908 must file a fresh application to register their marks under the new Trade Marks Law once it takes effect.
Myanmar’s Industrial Designs Act was also recently passed. As with the Trade Marks Law, it has yet to come into effect and no implementing regulations are currently available.
It is expected that the new IP laws will only come into force in a few years’ time, as a regulatory body has yet to be set up for the registration of the IP, and to oversee the enforcement of IP rights.
In the meantime, foreign businesses wishing to do business in Myanmar are advised to continue to register Declarations of Ownership in respect of their trademarks under the current practice.
Concluding Remarks
With the liberalization of Myanmar’s economy, foreign companies should seize the opportunity to be one of the early movers into Myanmar.
Myanmar is currently still undeveloped, Managedline business consultancy has a deep understanding of the regulatory and business environment in Myanmar. We are well equipped to assist clients with complex legal matters across a wide range of disciplines.
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